Petition for review filed in referring decision to G2/21 (T 0116/18)

The Opponent in the referring case to the Enlarged Board of Appeal (EBA) in G 2/21 has filed a petition for review following the final decision of the Board of Appeal. If the EBA agrees with the petitioner that there was a violation of their fundamental right to be heard, the case may be reopened. However, petitions for review are considered extraordinary legal remedies and it is notoriously difficult to persuade the EBA of their admissibility. Is the Opponent clutching at straws, or was there a substantial procedural violation in T 0116/18?

G 2/21 and T 0116/18: Case catch-up

In G 2/21, the EBA considered whether post-published evidence may be taken into account for inventive step. The EBA ordered that:

"A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention" (G 2/21, Headnote II)

However, the EBA did not elaborate on how G 2/21 should be applied. The Boards of Appeal were therefore left to interpret the order on a case-by-case basis. The referring Board of Appeal to G 2/21 in T 0116/18 recently provided their own interpretation of the general principles of G 2/21 with respect to the facts of the particular case. In its written decision, the Board of Appeal concluded that G 2/21 does not require there to be either a positive statement or experimental evidence of a technical effect in order for the effect to be relied on for inventive step (IPKat). In order to be relied on for inventive step, a technical effect must be "conceptually comprised" in the broadest technical teaching of the application as filed ("encompassed"). In other words, the technical effect must be in some way related to the general disclosure about the invention provided in the application as filed. 

On the basis of this interpretation, the Board of Appeal allowed the Patentee to rely on post-published data as evidence of a technical effect of the invention relied on for inventive step. The technical effect relied on by the Patentee was not explicitly disclosed in the application as filed. 

Petitions for review - Legal background

It is very difficult to get a petition for review heard by the EBA. The most common ground on which petitions for review are filed is that of a fundamental procedural defect of the right to be heard (Article 112a EPC).  However, the EBA often unanimously rejects petitions as being clearly inadmissible, on the grounds that the petitioner failed to take advantage of an opportunity to raise the issue with the Board of Appeal in question (Rule 106 EPC). Critically, petitions of review cannot be used to review the application of substantive law (CA/PL 17/00 of 27 March 2000).

A violation of the fundamental right to be heard in T 0116/18?

In their request for a petition for review in T 0116/18, the Opponent (Syngenta) argues that a fundamental violation occurred in relation to the application of G 2/21 by the Board of Appeal. The Opponent's central argument is that a new legal test was used by the Board of Appeal in their written decision and that the Opponent was not given the opportunity to comment on this new test during oral proceedings. 

The Opponent highlights Reason 1.1 in the Board of Appeal's written decision: 

"[...] in the board's view, the following question is to be asked: would the skilled person, having common general knowledge in mind, and based on the application as filed, have legitimate reason to doubt that the technical teaching at issue, i.e. the purported technical effect together with the claimed subject-matter, is an embodiment of the originally disclosed invention, i.e. the broadest technical teaching of the application as filed?"

Grasping at straws? 
For the Opponent, this test made a number of assumptions about the order from the EBA in G 2/21 that were not discussed at oral proceedings. In particular, "it implies that the 'would" of [...] of G 2/21 is not to be taken into consideration. It defines the term 'technical teaching' as corresponding to 'the purported technical effect together with the claimed subject-matter'. It gives the term 'the originally disclosed invention' a specific meaning - by stating that this would correspond to 'the broadest technical teaching of the application as filed'. Lastly, it stipulates that any purported technical effect may give rise to a patent provided that it can be considered, together with the claimed subject-matter, an embodiment of the broadest technical teaching of the application as filed". 

However, the Opponent may find it difficult to convince the EBA that these are valid grounds justifying a petition. It is established case law that Boards of Appeal are not obliged to explicitly state the reasons underlying a decision until they issue the final decision in writing. Furthermore, whilst the factual bases for a petition are the minutes of the oral proceedings and the written decision, it also cannot necessarily be inferred from the omission of a point of reasoning from the minutes of oral proceedings that a point was not considered (Case Law of the Boards of Appeal, V-B-3.11). 

Final thoughts

Most requests for petition for review are found inadmissible by the EBA. To this Kat, it seems likely that the EBA will reject this petition as the Opponent's arguments require a nuanced distinction to be drawn between the Board of Appeal's interpretation of G 2/21 at the hearing and in its written decision. Even if the petition were to be granted, there would still appear to be limited scope for the Patentee to convince the Board of Appeal to reverse its decision. However, in the meantime, Boards of Appeal will continue to apply G 2/21, potentially in ways that diverge from T 0116/18

Further reading

Image credit: MidJourney
Petition for review filed in referring decision to G2/21 (T 0116/18) Petition for review filed in referring decision to G2/21 (T 0116/18) Reviewed by Rose Hughes on Sunday, January 28, 2024 Rating: 5


  1. There seems to be a minor trend at the moment of filing petitions for review based on the allegation that the Board of Appeal in its decision has invented a new legal test, or adopted a new line of reasoning, without giving parties the opportunity to comment.

    Among pending cases at least the following come to mind:

    R 18/23 (T 522/21): alleged introduction of “full implementation of the claimed invention” requirement under Article 83 EPC creating a “new legal standard” on which parties were not heard (paragraphs 45-46 of the petition)

    R 12/23 (T 345/21): alleged reliance on “gold standard” in written decision rather than “essentiality test” without adequate opportunity for parties to comment and without actually applying the “gold standard” in full in the decision (paragraphs 2.i and ii of the petition)

    R 15/22 (T 980/19): alleged reformulation of objective technical problem without giving any notice to parties (paragraph 3.4 of the petition)

    R 7/21 (T 2842/18): alleged adoption of new “certainty” standard for assessing 123(2) (pages 13 onwards of the petition)

    R 8/19 (T 1537/16): alleged reformulation of objective technical problem without notice to parties (paragraph (06) of the petition)

    In most cases these types of petition seem to be a thinly-disguised attempt to get the Enlarged Board to review substantive aspects of patentability, which seems doomed to failure. (I am sure that there are also (unsuccessful) petitions which have already been decided along similar lines.)

    I wonder why parties are choosing to adopt what they must surely know to be futile arguments.

    In principle it is right that petitions should be an extraordinary remedy, otherwise the petition process risks becoming a de facto second level of appeal and everything would become subject to a petition, adding time and uncertainty to the outcome of proceedings at the EPO. However, the underlying facts as presented in many petitions can sometimes leave the feeling that the RPBA give the Boards freedom to behave in a not entirely equitable way, while the petition procedure is so tightly restricted that it leaves parties without any recourse against Boards misusing their discretion under the RPBA.

    Is it time for the EPO to take another look at whether the current petition system strikes the right balance? Or is the current state of affairs about right? What do readers think?

    1. Knowing that someone is watching you and can question you on how you behave will make most people behave better. Petitions will help keep Boards behaving well. That is worth paying the price in terms of petitions being filed for the wrong reasons. I think the system is working well as it is, and I don't think there is any easy way of improving this part of it.

  2. A total of 252 petitions were filed.
    41 are pending
    Of 28 admissible petitions, only 10 petitions were successful in that they led to the reopening of the appeal proceedings. From those 10 only 2 have ended with a different decision of the board.
    17 were withdrawn and 6 deemed not filed.
    The vast majority of petitions is either not admissible and if not clearly inadmissible not clearly allowable.

    The chances of success of a petition are thus very low. The present one, will most probably end the same.

    The problem is G 2/21 as such. The very wobbly formulation allows in general to boards to decide in favour of the proprietor. In the present case, there might have been some synergy, but a different one as that envisaged at filing.

    Next to the present decision, T 1989/19 can also be criticised. That a medicine has to show some storage stability is rather trivial. The only stability ever envisaged was the stability during the preparation of the powder.

    In T 681/21, the proprietor alleged a synergy which was never envisaged, and the board correctly decided that G 2/21 was not applicable.

    When applying G 2/21, it should not mainly mean that, in presence of a buzzword like synergy or stability, any other form of synergy or stability is encompassed by the original disclosure. In this respect, I have sympathy with the petitioner, although he might not succeed.

    It is clear that the EBA acting under Art 112a does not want in the slightest to get involved in any discussion about the substance or the exercise of discretion by the boards.

    In view of the great discrepancies in procedural matters by the boards, I am not sure that the refusal of the EBA to deal with the exercise of discretion by the boards is correct. Those decisions can be qualified as arbitrary, and the attitude of the EBA in this matter is not any longer tenable.

    What is actually needed at the EPO is the true independence of the BA and of the EBA, whereby members of the EBA should not be at the same time members of the BA. The reform of 2016 is only of cosmetic nature and does not guarantee at all the independence of the boards.

    The role of the EBA as revision instance should not be limited to procedural matters. What is needed is also a revision instance on substantial matters.


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